Justices to hear free speech clash over offensive trademarks

Sam Hananel

This Nov. 15, 2016 photo shows a view of the Supreme Court from the Capitol Dome, on Capitol Hill in Washington. An Asian-American rock band called the Slants has spent years locked in a legal battle with the government over its refusal to trademark the band‚Äôs name. The fight will play out Wednesday at the Supreme Court as the justices consider whether a law barring disparaging trademarks violates the band's free speech rights.

Image Credit: (AP Photo/Susan Walsh)

January 15, 2017 - 8:00 PM

WASHINGTON - The Slants aren't exactly a household name when it comes to music, but the Asian-American rock band has certainly made its mark in the legal world.

The Oregon-based group has spent years locked in a First Amendment battle with the government, which refuses to register a trademark for the band's name because it's considered offensive to Asians.

That fight will play out Wednesday in the nation's highest court as the justices consider whether a law barring disparaging trademarks violates the band's free-speech rights.

The case has drawn attention because it could affect the Washington Redskins in a similar fight to keep the football team's lucrative trademark protection. The government cancelled the team's trademarks last year after finding they are disparaging to Native Americans.

For Slants founder Simon Tam, the name was chosen not to offend, but to take on stereotypes about Asian culture. He says the band is reclaiming a term once used as an insult and transforming it into a statement of cultural pride.

"Words aren't equipped with venomous impact on their own," he said in an interview." They have to be tied to motive and rooted in context."

But the U.S. Patent and Trademark Office didn't see it that way. It refused to register the name in 2011, saying a trademark can be disparaging even if it's meant to be used in a positive light.

A divided federal appeals court handed the band a victory four years later, ruling that the law prohibiting offensive trademarks is unconstitutional.

"Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others," Judge Kimberly Moore said for the majority.

The Obama administration has urged the Supreme Court to overturn that ruling. In legal briefs, the Justice Department argues that the law does not restrict speech, but declines to associate the federal government with "racial epithets, religious insults and profanity as trademarks."

If the decision is upheld, the government warns it will be forced "to register, publish and transmit to foreign countries marks containing crude references to women based on parts of their anatomy; the most repellent racial slurs and white supremacist slogans; and demeaning illustrations of the prophet Mohammed and other religious figures."

Yet the trademark office has approved plenty of crude and offensive trademarks in the past. Those include: Afro Saxons and Dago Swagg clothing, Baked By A Negro bakery products, Retardipedia and Celebretards entertainment services, and the hip-hop band N.W.A., an acronym that includes a racial slur against African-Americans.

"If their intent is to curtail hate speech, it's not working," Tam says. "Trademark registration is not the mechanism to address those types of things."

The government is relying in part on a 2015 ruling in which the Supreme Court said the state of Texas could ban specialty license plates bearing the Confederate battle flag. The high court ruled 5-4 that the ban was allowed since state-issued license plates were a form of government speech.

But Megan Carpenter, a professor at Texas A&M University School of Law specializing in intellectual property law, said the Texas case may not extend to trademarks.

"The trademark office has said time and again that issuance of a trademark registration is not an endorsement of the underlying content," Carpenter said.

The Washington Redskins had hoped to piggyback on the Slants case and have the Supreme Court hear their dispute at the same time — even before the case finishes working its way through lower courts. But the justices declined to take up the unusual request and a Virginia federal appeals court has put the Redskins case on hold pending the outcome of the Slants case.

A loss of the team's trademark would strip the Redskins of certain legal protections, but would not force it to change the name. The Redskins have said their name honours Native Americans, but the team has faced years of legal challenges from groups that say it's a racial slur.

Several American Indian groups that oppose the use of the Redskins name filed a brief in the Slants case calling the adoption of "racial names" by sports teams "an especially derogatory trademark than warrants regulation."

As for the Slants, the band just released a new song called "From the Heart" about the upcoming case. Tam says it's "like an open letter to the trademark office saying we're not going to give up, we're going to continue fighting for what's ours."

The song is on the band's latest album "The Band Who Must Not Be Named."

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